返回概览 Decisions of the German Federal Supreme Court concerning an opposition on the basis of a device mark including a Maltese cross (likelihood of confusion because of association in the mind of the public -objection to the genuine use raised during appeal

On July 21, 2010 the German Federal Supreme Court published two significant decisions made on an opposition based on a device mark including the Maltese cross against a similar device mark in green including the additional word “LAZARUS”. The conflicting marks of these proceedings were the following:

http://www.mueller-bore.de/tl_files/images_content/kurzmitteilungen/malteser_cross.gif

http://www.mueller-bore.de/tl_files/images_content/kurzmitteilungen/lazarus_cross.gif

The services of the conflicting trademarks were more or less identical and cover, in particular, emergency medical and rescue services as well as social services. With respect to the marks the German Federal Supreme Court confirmed that the lower court, i. e. the German Federal Patent Court, was correct to assume that the device of a cross in the younger word and device mark “LAZARUS”, has an independent distinctive role in the composite sign, and that it can be left undecided whether this device constitutes the dominant element of the mark. Furthermore, the German Federal Supreme Court confirmed that under consideration of a normal degree of distinctiveness of the opposition trademark for the Maltese cross, an (indirect) likelihood of confusion in the form of an association in the mind of a public has to be assumed. This evaluation was, in particular, based on the consideration that the particular design of a cross is striking, and that the addressed trade circles will appreciate the word “LAZARUS” as the name of an undertaking. Additionally, the German Federal Supreme Court confirmed that the differing colour green of the younger trademark would not be sufficient to exclude a likelihood of confusion.

The German Federal Supreme Court also clarified that an obligation of the opponent to tolerate use and registration of the identical mark by the Order of St. John because of equal rights in the same mark does not limit the scope of protection of the opposition trademark in comparison to trademarks of third parties. Consequently, the obligation of the Order of Malta to tolerate use and registration of an identical mark by the Order of St. John because of their identical historical origin did not limit the scope of protection of its opposition trademark for a Maltese cross in comparison to the attacked younger word and device mark “LAZARUS”.

With its second decision, the German Federal Supreme Court remitted the case to the German Federal Patent Court, claiming that the German Federal Patent Court was not correct to refuse an objection against the genuine use of the opposition trademark, which was only made one week prior to the public hearing before the German Federal Patent Court. In this respect, the German Federal Supreme Court clarified that a rejection of the objection against genuine use of the opposition trademark would only have been possible if the German Federal Patent Court ordered preliminary written proceedings prior to the public hearing. However, the German Federal Patent Court did not order preliminary written proceedings. Accordingly, the provisions of the German Code of Civil Procedure regarding a possible rejection of arguments filed too late in proceedings in which the parties must be represented by lawyers could - according to the German Federal Supreme Court - not be applied in the present case. Consequently, it appears that an objection against the genuine use of an opposition trademark can in opposition proceedings against a German trademark still be made during a public hearing in the appeal instance with the German Federal Patent Court - unless the German Federal Patent Court ordered preliminary written proceedings.

In connection with the objection of genuine use, the German Federal Supreme Court also decided that an objection against the genuine use can be made again during appeal proceedings with the German Federal Patent Court. In particular, the German Federal Supreme Court pointed out that a preceding abandonment of an objection against genuine use of the opposition trademark does not preclude the applicant of the attacked German trademark from objecting to the genuine use of the opposition trademark again later in the opposition proceedings.

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